On Sunday 29 June 2008, the Adjudicator of Intellectual Property at the Israel Patent Office, Noah Shalev Shlomovitz, cancelled five registered trademarks relating to the term Versace which were owned by the Versace 83 company, an Israel company.
The decision is interesting in that the Italian fashion house Gianni Versace S.p.A. who first registered a mark in Israel back withdrew its opposition to the registrations by the Israeli company nearly 20 years ago, effectively consenting to the opposing marks.
Since 2000 however, with the expansion of the Israeli “VERSACE” chain and the opening of branches in prime locations, The Italian design house started taking action to prevent commercial use of the mark and to cancel the registrations of the Israeli company.
Representing the Italian design house, Adv. Zvi Chowers claimed that usage of the Versace label was designed to “confuse consumers regarding the source of the products sold at the stores operated by the Israeli company.”
Shlomovitz applied a provision in the current Israeli Trade Marks Ordinance that states that “application for removal of a trademark on the grounds that the application for registration of the mark was filed in bad faith may be filed at any time”, despite the fact that the Israeli Versace trademark registrations were obtained more than five years before the amendment was introduced, thereby effectively ruling that there is no statute of limitation by which an established registered mark can gain legitimacy. Shmulovitz also raised issues of fraud and rejected the argument that the withdrawal of opposition created a kind of file wrapper estoppel or waiver, closing the issue to further challenges.
Following Former Chief Justice Barak’s approach that “Good Faith” is the underlining principle of all Israeli Law, Shlomovitz concluded that the owner of the cancelled registrations selected the marks in bad faith, trading on the reputation of the Italian design house, and used the marks in a manner that misled the public. On that basis, the Italian company is entitled to prevent others from using its name and that of it’s founder.
The rule brings to mind the Chanel case back in 1954 when an Israeli judge ruled that using the French designer’s name for an Israeli perfume was forbidden, despite the mark not being registered in Israel.
Trademark issues are never final and registered marks can and are deleted due to improper use, lack of use, and the like.
If a mark such as aspirin is used generically, it becomes a word and loses it’s ability to be used for branding.
A few months ago, Veteran Turkish paint company Dewilux which has traded for decades, lost their rights to the brand name in Israel due to the similarity to that of an even older paint brand Dulux (owned by ICI). Sometimes, albeit rarely, the later mark can be lost, as happened to Veteran Israel irrigation company, Lego, which lost rights to their name in the UK and changed their name to Elgo., subsequently having to retool all their components – thi despite their predating the Snish construction toy manufacturer and their components, albeit being sold as plastic kits, were aimed at a different market entirely.
It is necessary to get expert advice when building and maintaining a trademark portfolio. Mistakes can be very costly.
